Appointment in Application Filed On or After September 16, 2012

[Editor Note: See

MPEP § 402.02(b)

for information

pertaining to appointment of a power of attorney in an application filed before

September 16, 2012.]

37 CFR 1.32 Power of attorney.

*****

(b) A power of attorney must:

(1) Be in writing;

(2) Name one or more representatives in

compliance with paragraph (c) of this section;

(3) Give the representative power to act on

behalf of the principal; and

(4) Be signed by the applicant for patent (§

1.42

) or the

patent owner. A patent owner who was not the applicant under §

1.46

must appoint

any power of attorney in compliance with §§

3.71

and

3.73

of this chapter.

*****

(d) A power of attorney from a prior national

application for which benefit is claimed under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

in a continuing

application may have effect in the continuing application if a copy of the

power of attorney from the prior application is filed in the continuing

application unless:

(1) The power of attorney was granted by the

inventor; and

(2) The continuing application names an

inventor who was not named as an inventor in the prior

application.

(e) If the power of attorney was granted by the

originally named inventive entity, and an added inventor pursuant to §

1.48

does not provide a power of attorney consistent

with the power of attorney granted by the originally named inventive entity,

the addition of the inventor results in the loss of that power of attorney

upon grant of the §

1.48

request. This

provision does not preclude a practitioner from acting pursuant to §

1.34

, if applicable.

I.

GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY

For applications filed on or after September 16,

2012,

37 CFR

1.32(b)(4)

sets forth that a power of attorney must be

signed by the applicant for patent (i.e., all parties identified as the applicant

as defined by

37 CFR 1.42(a)

) or the patent

owner (for reissue applications, reexamination proceedings and supplemental

examination proceedings)

licable.

I.

GENERAL REQUIREMENTS FOR POWERS OF ATTORNEY

For applications filed on or after September 16,

2012,

37 CFR

1.32(b)(4)

sets forth that a power of attorney must be

signed by the applicant for patent (i.e., all parties identified as the applicant

as defined by

37 CFR 1.42(a)

) or the patent

owner (for reissue applications, reexamination proceedings and supplemental

examination proceedings). An assignee who is not an applicant cannot revoke or

appoint power of attorney in a patent application.

Pursuant to

37 CFR 1.42

, the word

“applicant” refers to the inventor or all of the joint inventors or to the person

applying for a patent as provided in

37 CFR 1.43

(legal

representative of a deceased or legally incapacitated inventor),

1.45

(joint inventor(s) on behalf of themselves and an omitted inventor) or

1.46

(assignee, obligated assignee, or person who otherwise

shows sufficient proprietary interest). Where the applicant is all of the joint

inventors under

37 CFR 1.45

, one or more of

the joint inventor-applicants may be appointed to represent all of the joint

inventor-applicants. The power of attorney must be signed by parties identified as

the applicant in order to be effective.

As set forth in

37 CFR

1.42(b)

, if a person is applying for a patent as provided in

37 CFR

1.46

, that person (which may be a juristic entity), and not

the inventor, is the applicant. In this situation, the Office would not accept a

power of attorney from the inventor. An assignee or obligated assignee who is the

applicant may appoint an effective power of attorney without the need to establish

the right to take action under

37 CFR 3.71

. See also

MPEP § 325

. Persons who otherwise show sufficient

proprietary interest in the matter may supply a power of attorney along with a

petition under

37 CFR 1.46(b)(2)

, which power

would be effective once the petition is granted

ignee or obligated assignee who is the

applicant may appoint an effective power of attorney without the need to establish

the right to take action under

37 CFR 3.71

. See also

MPEP § 325

. Persons who otherwise show sufficient

proprietary interest in the matter may supply a power of attorney along with a

petition under

37 CFR 1.46(b)(2)

, which power

would be effective once the petition is granted.

An assignee who is not the applicant may sign a power

of attorney only if the assignee becomes the applicant per

37 CFR

1.46(c)

(which requires compliance with

37 CFR

3.71

and

3.73

). See

MPEP § 325

. A patent owner who was not the applicant

under

37 CFR

1.46

must appoint any power of attorney in compliance with

37 CFR

3.71

and

3.73

. This covers a patent

owner in a reissue application who was not the applicant under

37 CFR

1.46

in the application for the original patent, as well as

a patent owner in a supplemental examination or reexamination proceeding who was

not the applicant under

37 CFR 1.46

.

The power of attorney must be signed by someone who is

authorized to act on behalf of the assignee-applicant (i.e., a person with a title

that carries apparent authority, or a person who includes a statement of

authorization to act.). A patent practitioner is not authorized to act on behalf

of an assignee simply by existence of authority to prosecute an application.

II.

POWERS OF ATTORNEY IN CONTINUING APPLICATIONS

Pursuant to

37 CFR

1.32(d)

, a power of attorney from a prior national

application for which benefit is claimed under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

in a continuing application may have effect in the

continuing application if a copy of the power of attorney from the prior

application is filed in the continuing application unless: (1) The power of

attorney was granted by the inventor; and (2) the continuing application names an

inventor who was not named as an inventor in the prior application

imed under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

in a continuing application may have effect in the

continuing application if a copy of the power of attorney from the prior

application is filed in the continuing application unless: (1) The power of

attorney was granted by the inventor; and (2) the continuing application names an

inventor who was not named as an inventor in the prior application. Thus

37

CFR 1.32(d)

specifically requires that a copy of the power

of attorney from the prior application be filed in the continuing application to

have effect (even where a change in power did not occur in the prior application).

Additionally, the copy of the power of attorney must comply with

37 CFR

1.32(b)

in the continuing application in order to be

accepted, meaning that it must be signed by the applicant for patent named in the

continuing application.

III.

POWER OF ATTORNEY FORMS FOR APPLICATIONS FILED ON OR AFTER SEPTEMBER 16,

2012

The following forms, available on the USPTO website

at

www.uspto.gov/patent/patents-forms

, are for use in

applications filed on or after September 16, 2012: PTO/AIA/80, PTO/AIA/81, and

PTO/AIA/82. Form PTO/AIA/81A may be used in a patent that issued from an

application filed on or after September 16, 2012.

PTO/AIA/80

Form PTO/AIA/80 may be used by assignees who either

are the named applicant or are becoming the applicant by filing a request to

change the applicant under

37 CFR 1.46(c)

. In either

situation, this form must be accompanied by a statement under

37 CFR

3.73(c)

(Form PTO/AIA/96 or equivalent). The Form PTO/AIA/80

must be signed by the named assignee or, where the assignee is a juristic entity,

by a person who is authorized to act on behalf of the assignee. Where an assignee

gives the practitioner specific authority to act on behalf of the assignee (e.g.,

authority given by organizational resolution), a practitioner may sign the

PTO/AIA/80 on behalf of the assignee

AIA/96 or equivalent). The Form PTO/AIA/80

must be signed by the named assignee or, where the assignee is a juristic entity,

by a person who is authorized to act on behalf of the assignee. Where an assignee

gives the practitioner specific authority to act on behalf of the assignee (e.g.,

authority given by organizational resolution), a practitioner may sign the

PTO/AIA/80 on behalf of the assignee. Where an assignee is named as the applicant

in the patent application, the assignee-applicant can appoint a power of attorney

using the PTO/AIA/82 form instead of Form PTO/AIA/80.

PTO/AIA/81

Form PTO/AIA/81 may be used by joint inventors who

are the applicant to give one or more joint inventor-applicants power of attorney

to sign on behalf of all joint inventor-applicants. Since powers of attorney must

be signed by “the applicant,” all joint inventor-applicants must sign a power of

attorney, including the joint inventor(s) who are being given power of attorney.

For example, if the applicant is four joint inventors, A, B, C. and D, and all

four wish to appoint inventor-applicant C as having power of attorney, A, B, C and

D must all sign a power of attorney that appoints C.

PTO/AIA/82

Form PTO/AIA/82 may be used by the applicant for

patent to appoint one or more patent practitioners. The form has three pages,

PTO/AIA/82A (Part A), PTO/AIA/82B (Part B), and PTO/AIA/82C (Part C). Part A is a

transmittal page used to identify the application (e.g., application number, if

known, filing date, first named inventor) to which the power of attorney is

directed and must be signed by a proper

37 CFR 1.33(b)

party. Part B

is the power of attorney and may also specify the correspondence address. Part B

must be signed by the applicant. Where there are multiple applicant parties, a

power of attorney signed by each party must be submitted, and the powers must make

the same appointment. For information about powers of attorney by less than all

applicants, see

MPEP

§ 402.10

igned by a proper

37 CFR 1.33(b)

party. Part B

is the power of attorney and may also specify the correspondence address. Part B

must be signed by the applicant. Where there are multiple applicant parties, a

power of attorney signed by each party must be submitted, and the powers must make

the same appointment. For information about powers of attorney by less than all

applicants, see

MPEP

§ 402.10

. Part C is an optional page that may be used to

appoint up to 10 patent practitioners by name and registration number.

PTO/AIA/82 may be used like a general power of

attorney, if desired. For example, where the applicant is a juristic entity

assignee, an officer of the company could sign Part B, leaving the optional

“Application Number” and “Filing Date” boxes empty, and then the patent

practitioner could complete and sign one Part A for each respective application

and file a copy of Part B with each Part A. If Part A or an equivalent is not

filed with Part B, then the “Application Number” and “Filing Date” boxes on Part B

must be completed to identify the application to which the power is being

directed. See

37

CFR 1.5

. Note that the “Application Number” and “Filing

Date” boxes of Part B may not be filled in by a patent practitioner after Part B

has been signed by the applicant (i.e., the form may not be altered once it has

been signed).

Note that the Office does not recommend that

practitioners use a combined declaration and power of attorney document, and no

longer provides such a form on the USPTO website.

PTO/AIA/81A

Form PTO/AIA/81A may be used to appoint a power of

attorney in a patent resulting from an application filed on or after September 16,

2012 and must be signed by the applicant or the current patent owner. If the form

is signed by the current patent owner, compliance with

37 CFR

3.71

and

3.73

is required by filing a

Statement Under

37 CFR 3.73(c)

(Form

PTO/AIA/96 or equivalent).